Sources of Patent Law

Constitutional Provision
Art. XII Secs. 6; 14
Art. XIV Secs. 10-18

International Agreements
1. Agreement on Trade Related Aspects on
Intellectual Property Rights (TRIPS)
2. Paris Convention for the Protection of
Industrial Property
ATTY. IGNACIO S. SAPALO
1 3. Patent Cooperation Treaty 2

Sources of Patent Law The Patent Law

Laws What is a patent?

1. Civil Code of the Philippines Art. 521 & Art. 712
2. Republic Act 8293 - Intellectual Property Code
(IPC) of the Philippines
3. Republic Act 9150 – Protection of Lay-Out
Designs of Integrated Circuits
4. Republic Act 9168 – Philippine Variety Act
5. Republic Act 9502 – Cheaper Medicine Act
3 4
A patent is a statutory grant, by
government, which confers to an inventor
or his legal successor, in return for the
disclosure of the invention to the public,
the right for a limited period of time to
exclude others from making, using, selling
or importing the invention within the
territory of the country that grants the
patent.

1

The functions of the patent
system
- the incentive function
- a source of technical information
- enhances the transfer of
technology
5 6
Patentable Subject matter
• Sections 21. – Patentable Inventions
- Any TECHNICAL SOLUTION of a
problem in any field of human activity which
is new, involves an inventive step and is
industrially applicable shall be patentable.
It may be, or may relate to, a product, or
process, or an improvement of any of the
foregoing. (Sec. 7, R.A. No. 165a)
7 8
TOPICS FOR DISCUSSION
A. Patentable subject matter
B. Conditions of patentability
C. Patent application and
application procedure
D. Rights of patentees
E. Infringement of patents
What is a technical solution?
The Bureau of Patents’ Manual of Patent Examination
Procedure (MPEP) states that “where the claimed subject
matter is concerned only with the program-controlled
internal working of a known computer, the subject matter
should be patentable if it provides a technical effect”. An
example the MPEP gives is the case of a data processing
system with a small fast working memory and a larger but
slower memory. If the two memories are organized under
program control, in such a way that a process, which needs
more address space than the capacity of the fast working
memory, can be executed at substantially the same speed if
the process data were loaded entirely in that fast memory.
The effect of the program in extending the working memory
is of a technical character.
2
 ARE ALL INVENTIONS
PATENTABLE?
NO. Only a product or a
process or improvement
thereof that provides a
technical solution to a
problem which is new,
involves an inventive step
and is industrially applicable
are patentable.
SECTION 22. NON-PATENTABLE INVENTIONS.
SECTION 22.1 – DISCOVERIES, SCIENTIFIC
THEORIES AND MATHEMATICAL METHODS;
xxxx
Are Natural Products Patentable?
The answer is “NO”! It is not possible to patent a
molecule in exactly the same form in which it known
in nature – as the product would them lack novelty.
However, it is possible to patent a product
originating from natural sources in a form in which it
does not occur naturally for example in a highly
purified form. e.g. an antibiotic isolated from a
micro-organisms present in a soil sample provided it
exhibits a technical effect capable of ‘industrial
application’.
Sec. 101 of U.S. Patent Act
defines patentable subject
matter, viz:
Whoever invents or discovers any
new or useful process machine,
manufactures or composition of
matter, or any new and useful
improvement thereof, may obtain a
patent therefor …
9 10
SECTION 22.1
Product of Nature: Not Patentable
Funk Brothers Seed Company v. Kalo Inoculant
Company 333 U.S. 127
Inoculants that have been manufactured and sold
contain only one specie of root-nodule bacteria
(Rhizobia) to be used only in plants belonging to one
cross-inoculation group. Mixed cultures of the
bacteria were ineffective because they produced an
inhibitory effect on each other when mixed in a
common base.
Bond discovered strains of this bacteria that do not
exert mutually inhibitive effect on each other, and
obtained a patent for a mixed culture of the bacteria
capable of inoculating the seeds of plants belonging
11 to several cross-inoculation groups. 12
3
SECTION 22.1
Product of Nature: Not Patentable
Funk Brothers Seed Company v. Kalo Inoculant Company
(continued)
The product claim that is challenged states that:
“An inoculant for leguminous plants comprising a
plurality of selected mutually non-inhibitive strains of
different species of bacteria of the genus Rhizobium,
said strains being unaffected by each other in respect to
their ability to fix nitrogen in the leguminous plant for
which they are specific.” [***3]
13
Source: Ateneo Law Journal
SECTION 22.1
Product of Nature: Not Patentable
Funk Brothers Seed Company v. Kalo Inoculant Company
(continued)
“Each of the species of root-nodule bacteria contained in
the package infects the same group of leguminous plants
which it always which it always infected. No species
acquires a different use. The combination of species
produces no new bacteria, no change in the six species
of bacteria, and no enlargement of the range of their
utility. Each species has the same effect it always had.
The bacteria perform in their natural way. Their use in
combination does not improve in any way their natural
functioning. They serve the ends nature originally
provided, and act quite independently of any effort of the
15
patentee.”
Source: Ateneo Law Journal
SECTION 22.1
Product of Nature: Not Patentable
Funk Brothers Seed Company v. Kalo Inoculant Company
(continued)
Held: The US Supreme Court: not patentable, because
they were merely a discovery of the non-inhibition
qualities of certain strains of the bacteria Rhizobia when
combined and using a common base. Just because no
one had yet discovered such combination does not make
it inventive. The combination produces no new bacteria.
The bacteria perform in their natural way. Their use in
combination does not in any way improve their natural
functioning. Bond made a new different composition of
non-inhibitive inoculants but the aggregation of species
fell short of invention within the meaning of the statute.
14
Source: Ateneo Law Journal
SECTION 22.4
Are Life Forms Patentable?
NO, EXCEPT WHEN MAN MADE
Micro-organisms
Diamond v. Chakrabarty, 447 U.S. 303 (1980), the U.S.
Supreme Court had to decide the patentability of certain
micro-organisms (which Dr. Chakrabarty had genetically
engineered by adding four plasmids to a bacterium which
enabled it to break down various components of crude oil.
This is a new characteristic not possessed by any naturally
occurring bacteria. By a majority decision, the court held
that a patent could be granted stating that “anything under
the sun that is made by man” was potentially patentable.
This holds equally true in the Philippines.
16
4
SECTION 22.4
Are Life Forms Patentable?
NO, EXCEPT WHEN MAN MADE
Micro-organisms
Are microorganisms covered or fall within the meaning or
term “manufacture” or “composition of matter”? By
definition “manufacture” means the “production” of articles
for use from new or prepared materials by giving to these
materials new forms, qualities or combinations, whether by
hand or machinery. “Composition of matter” has been
construed to include all “all compositions of two or more
substances and … all composite articles, whether they be
the results of chemical union, or of mechanical mixture, or
whether they be gases, fluids, powders or solids.”
17
SECTION 22.1
Is a naturally occurring DNA segment
patentable?
Association for Molecular Pathology v. Myriad Genetics,
US Supreme Court decision dated June 13, 2013.
Each human gene is encoded as deoxyribonucleic acid
(DNA), which takes the shape of a “double helix”. Each
“cross-bar” in that helix consists of two chemically joined
nucleotides. Sequences of DNA nucleotides contain the
information necessary to create strings of amino acids used
to build proteins in the body. The nucleotides that code for
amino acids are “exons”, and those that do not are “introns”.
Scientists can extract DNA from cells to isolate specific
segments for study. They can also synthetically create exons-
only strands of nucleotides known as composite DNA (cDNA).
cDNA contains only the exons that occur in DNA, omitting 19the
intervening introns.
SECTION 22.4
Are Life Forms Patentable?
NO, EXCEPT WHEN MAN MADE
Micro-organisms
In choosing such expansive terms as “manufacture” and
“composition of matter” Congress plainly contemplated that
the Patent laws would be given a wide scope.
“Judged in this light, respondent’s micro-organism plainly
qualifies as patentable subject matter. His claim is not to a
hitherto unknown natural phenomenon, but to a nonnaturally
occurring manufacture or composition of matter – a product
of human ingenuity “having distinctive name, character
[and]”
18
SECTION 22.1
Is a naturally occurring DNA segment
patentable? (continued)
Association for Molecular Pathology v. Myriad
Genetics
Respondent Myriad Genetics, Inc. (Myriad), obtained
several patents after discovering the precise location and
sequence of the BRCA1 and BRCA2 genes, mutations of which
can dramatically increase the risk of breast and ovarian cancer.
This knowledge allowed Myriad to determine the genes typical
nucleotide sequence, which, in turn, enabled it to develop
medical tests useful for detecting mutations in these genes in a
particular patient to assess the patient’s cancer risk. If valid,
Myriad’s patents would give it the exclusive right to isolate an
individual’s BRCA1 and BRCA2 genes, and would give Myriad the
exclusive right to synthetically create BRCA cDNA. Petitioners
filed suit, seeking a declaration that Myriad’s patents are invalid
20
under 35 U.S.C. § 101.
5
 SECTION 22.1
Association for Molecular Pathology v. Myriad
Genetics (continued)
Held:
(a) The patent Act permits patents to be issued to
“[w]hoever invents or discovers any new and useful . . . composition
of matter,” § 101, but “laws of nature, natural phenomena, and
abstract ideas” “’are basic tools of scientific and technological
work’” that lie beyond the domain of patent protection.
(b) Myriad did not create or alter either the generic
information encoded in the BCRA1 and BCRA2 genes or the genetic
structure of the DNA. It found an important and useful gene, but
groundbreaking, innovative, or even brilliant discovery does not by
itself satisfy the § 101 inquiry. See Funk Brothers Seed Co. v. Kalo
Inoculant Co., 333 U.S. 127. Finding the location of the BRCA1 and
BRCA2 genes does not render the genes patent eligible “new . . .
composition[s] of matter.” § 101
21
SECTION 22.1
Are Scientific Principles Such as the Pythagorean
Theorem or Einstein’s Law of Relativity Patentable?
NO. They are basic principles in science and
mathematics with a broad range of applications
which cannot be appropriated by one individual
enterprise because of its high costs and
fundamental interest to the entire community. It
becomes appropriable only once it has been
reduced to a specific practical application, that is,
to the invention of a specific technological
teaching which is industrially applicable.
23
SECTION 22.1
Association for Molecular Pathology v. Myriad
Genetics (continued)
Held:
(c) cDNA is not a “product of nature,” so it is patent eligible
under § 101. cDNA does not present the same obstacles to
patentability as naturally occurring, isolated DNA segments. Its
creation results in an exons-only molecule, which is not naturally
occurring. Its order of the exons may be dictated by nature, but the
lab technician unquestionably creates something new when introns
are removed from a DNA sequence to make cDNA. Pp. 16-17.
22
SECTION 22.1
Are Ideas Patentable?
No, but a specific application of ideas is
patentable.
In O’Reilly v. Morse, Morse was allowed a patent for a process of using
electromagnetism to produce distinguishable signs for telegraphy. But
the Court denied the eighth claim in which Morse claimed the use of
“electro magnetism, however developed for marking or printing
intelligible characters, signs, or letters, at any distances.”
The Court in disallowing that claim said, “If this claim can be maintained,
it matters not by what process or machinery the result is accomplished.
For aught that we now know some future inventor, in the onward march
of science, may discover a mode of writing or printing at a distance by
means of the electric or galvanic current, without using any part of the
process or combination set forth in the plaintiff’s specification. His
invention may be less complicated --- less liable to get out of order ---
less expensive in construction, and its operation. But yet if it is covered
by this patent the inventor could not use it, nor the public have the
benefit of it without the permission of this patentee.” Id., at 113. 24
6
SECTION 22.1
Are Ideas Patentable?
No, but a specific application of ideas is
patentable. (continued)
In the Telephone Cases, 126 U.S. 1, 534, the Court explained the
Morse case as follows: “The effect of that decision was, therefore,
that the use of magnetism as a motive power, without regard to the
particular process with which it was connected in the patent, could
not be claimed, but that its use in that connection could. Bell’s
invention was the use of electric current to transmit vocal or other
sounds. But the claim was not “for the use of a current or electricity
in its natural state as it comes from the battery, but for putting a
continuous current in a closed circuit into a certain specified
condition suited to the transmission of vocal and other sounds, and
using it in that condition for that purpose.” 126 U.S. at 534. The
claim, in other words, was not “one for the use of electricity distinct
from the particular process with which it is connected in his patent.”
Id., at 535. The patent was for that use of electricity “both for the
magnetic and variable resistance methods.” Id., at 538. Bell’s claim
25
in other words, was not one for all telephonic use of electricity.
SECTION 22.2 – SCHEMES, RULES AND METHODS OF
PERFORMING MENTAL ACTS, PLAYING GAMES OR DOING
BUSINESS, AND PROGRAMS FOR COMPUTERS
Ideas Are Not Patentable
Gottschalk v. Benson (continued)
Some of the digits are stored as components of the computer. Others
are introduced into the computer in a form which is designed to
recognize. The computer operates then upon both new and
previously stored data. The general purpose computer is designed to
perform operations under many different programs.
Here, the “process” claim is so abstract and sweeping as to cover
both known and unknown uses of the BCD to pure-binary conversion.
The end use may (1) vary from the operation of a train to verification
of drivers’ licenses to researching the law books for precedents and
(2) be performed through any existing machinery or future-devised
machinery or without any apparatus.
27
SECTION 22.2 – SCHEMES, RULES AND METHODS OF
PERFORMING MENTAL ACTS, PLAYING GAMES OR DOING
BUSINESS, AND PROGRAMS FOR COMPUTERS
Ideas Are Not Patentable
Gottschalk v. Benson
Applicant filed in the Patent Office an application for an invention
which was described as being related “to the processing of data by
program and more particularly to the programmed conversion of
numerical information” in general purpose digital computers. They
claimed a method for converting binary-coded-decimal (BCD)
numerals into pure binary numerals. The claims were not limited to
any particular art or technology, to any particular apparatus or
machinery, or to any particular end use. They purported to cover any
use of the claimed method in a general purpose digital computer of
any type.
A digital computer, as distinguished from an analogue computer, is
that which operates on data expressed in digits, solving a problem by
doing arithmetic as a person would do it by head and hand. See
26
Benray, Understanding Digital Computers (1946) p. 4.
SECTION 22.2
Ideas Are Not Patentable
Gottschalk v. Benson (continued)
Held: The mathematical formula involved here has
no substantial practical application, except in
connection with a digital computer if considered
patentable, the patent would wholly pre-empt the
mathematical formula and would be a patent on the
algorithm itself.
28
7
Parker v. Flook decision
Facts: Respondent applied for a patent on a "Method for Updating
Alarm Limits." The only novel feature of the method is a
mathematical formula. In Gottschalk v. Benson, 409 U. S. 63, we
held that the discovery of a novel and useful mathematical
formula may not be patented. The question in this case is whether
the identification of a limited category of useful, though
conventional, post-solution applications of such a formula makes
respondent's method eligible for patent protection. An "alarm
limit" is a number. During catalytic conversion processes,
operating conditions such as temperature, pressure, and flow
rates are constantly monitored. When any of these "process
variables" exceeds a predetermined "alarm limit," an alarm may
signal the presence of an abnormal condition indicating either
inefficiency or perhaps danger. Fixed alarm limits may be
appropriate for a steady operation, but during transient operating
situations, such as start-up, it may be necessary to "update" the
alarm limits periodically. 29
Parker v. Flook decision (continued)
Facts: The patent application does not purport to explain
how to select the appropriate margin of safety, the
weighting factor, or any of the other variables. Nor does it
purport to contain any disclosure relating to the chemical
processes at work, the monitoring of process variables,
or the means of setting off an alarm or adjusting an alarm
system. All that it provides is a formula for computing an
updated alarm limit. Although the computations can be
made by pencil and paper calculations, the abstract of
disclosure makes it clear that the formula is primarily
useful for computerized calculations producing automatic
adjustments in alarm settings.
31
Parker v. Flook decision (continued)
Facts: Respondent's patent application describes a method of
updating alarm limits. In essence, the method consists of three
steps: an initial step which merely measures the present value of
the process variable (e. g., the temperature) ; an intermediate step
which uses an algorithm to calculate an updated alarm-limit
value; and a final step in which the actual alarm limit is adjusted
to the updated value. The only difference between the
conventional methods of changing alarm limits and that described
in respondent's application rests in the second step-the
mathematical algorithm or formula. Using the formula, an operator
can calculate an updated alarm limit once he knows the original
alarm base, the appropriate margin of safety, the time interval that
should elapse between each updating, the current temperature (or
other process variable), and the appropriate weighting factor to be
used to average the original alarm base and the current
temperature.
30
Parker v. Flook decision
HELD: The invention was not a patentable “process.” The Court
conceded the invention at issue, unlike the algorithm in Benson, had
been limited so that it could still be freely used outside the
petrochemical and oil-refining industries. 437 U. S., at 589–590.
Nevertheless, Flook rejected “[t]he notion that post-solution activity,
no matter how conventional or obvious in itself, can transform an
unpatentable principle into a patentable process.” Id., at 590. The
Court concluded that the process at issue there was “unpatentable
under §101, not because it contain[ed] a mathematical algorithm as
one component, but because once that algorithm [wa]s assumed to
be within the prior art, the application, considered as a whole,
contain[ed] no patentable invention.” Id., at 594. As the Court later
explained, Flook stands for the proposition that the prohibition
against patenting abstract ideas “cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment” or adding “insignificant postsolution activity.”
Diehr, 450 U. S., at 191–192.
32
8
SECTION 22.2
Is The Computer Software Patentable?
Computer programs are, in general
copyright. In other countries,
programming techniques, as distinct from
actual programs, are also not supposed
to be patentable, but there are ways in
which they can be made patentable as
ruled in Diamond v. Diehr, 450 U.S. 175
33
SECTION 22.2
Computer–Implemented invention:
“computer-implemented invention” means any
invention in the sense of the European Patent
Convention, the performance of which involves
the use of a computer, computer network or other
programmable apparatus and having in its
implementations one or more non-technical
features which are realised wholly or partly by a
computer program or computer programs,
besides the technical features that any invention
must contribute.
(European Parliament, Amendment 36=42=117)
35
SECTION 22.2
Definition Of Computer Program
As defined in Sec. 171.4 of the IP Code, a
“computer program” is a set of instructions
expressed in words, codes, schemes, or in any
other form, which is capable, when incorporated
in a medium that the computer can read, of
causing the computer to perform or achieve a
particular task or result.
34
Source: Ateneo Law Journal
SECTION 22.2
Is a computer-Implemented Invention Patentable?
Yes, provided it does not attempt to patent a
mathematical formula.
Diamond v. Diehr
Respondents filed a patent application claiming
invention for a process for molding raw, uncured,
synthetic rubber into cured precision products. While it
was possible, by using well-known time, temperature,
and cure relationships, to calculate by means of
established mathematical equation when to open the
molding press and remove the cured product, according
to respondents, the industry had not been able to
measure precisely the temperature inside the press, thus
making it difficult to make the necessary computations to
determine the proper cure time. 36
Source: Ateneo Law Journal
9
SECTION 22.2
Is a computer-Implemented Invention Patentable?
Yes, provided it does not attempt to patent a
mathematical formula.
Diamond v. Diehr (continued)
Respondents characterized their contribution to the art to reside in
the process of constantly measuring the temperature inside the
mold and freezing the temperature measurements into a computer
that repeatedly recalculates the cure time by use of the
mathematical equation and then signals a device to open the press
at the proper time. As in Chakrabarty, we must here construe 35
U.S.C. § 101 which provides:
“Whoever intents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefor, subject
to the conditions and requirements of this title [Footnote 6]” 37
SECTION 22.2
Is a computer-Implemented Invention Patentable?
Yes, provided it does not attempt to patent a
mathematical formula.
Diamond v. Diehr (continued)
In the language of the patent law, it is an art. The machinery pointed out as
suitable to perform the process may or may not be new or patentable,
whilst the process itself may be altogether new, and produce an entirely
new result. The process requires that certain things should be done with
certain substances, and in a certain order; but the tools to be used in doing
this may be of secondary consequence.
Recently in Gottschalk v. Benson, 409 U.S. 63 (1972), we repeated the
above definition recited in Cochrane v. Deener, adding:
“Transformation and reduction of an article ‘to a different state or thing’ is
the clue to the patentability of a process claim that does not include
particular machines.”
39
SECTION 22.2
Is a computer-Implemented Invention Patentable?
Yes, provided it does not attempt to patent a
mathematical formula.
Diamond v. Diehr (continued)
Although the term “process” was not added to 35 U.S.C § 101 until
1952, a process has historically enjoyed patent protection because
it was considered a form of “art” as that term was used in the 1793
Act. [Footnote 7] In defining the nature of a patentable process, the
Court stated:
“That a process may patentable, irrespective of the particular form
of the instrumentalities used, cannot be disputed. . . . A process is a
mode of treatment of certain materials to produce a given result. It
is an act, or a series of acts, performed upon the subject matter to
be transformed and reduced to a different state or thing. If new and
useful, it is just as patentable as is a piece of machinery.” 38
SECTION 22.2
Computer-Implemented Invention
Diamond v. Diehr
Held: Analyzing respondents' claims according to the above
statements from our cases, we think that a physical and
chemical process for molding precision synthetic rubber
products falls within the § 101 categories of possibly
patentable subject matter. That respondents' claims involve
the transformation of an article, in this case raw, uncured
synthetic rubber, into a different state or thing cannot be
disputed. The respondents' claims describe in detail a step-
by-step method for accomplishing such, beginning with the
loading of a mold with raw, uncured rubber and ending with
the eventual opening of the press at the conclusion of the
cure. Industrial processes such as this are the types which
have historically been eligible to receive the protection of
our patent laws. 40
Source: Ateneo Law Journal
10
SECTION 22.2
Computer-Implemented Invention
Diamond v. Diehr (continued)
Held: Parker v. Flook, supra, presented a similar situation.
The claims were drawn to a method for computing an
"alarm limit." An "alarm limit" is simply a number, and the
Court concluded that the application sought to protect a
formula for computing this number. Using this formula, the
updated alarm limit could be calculated if several other
variables were known. The application, however, did not
purport to explain how these other variables were to be
determined, nor did it purport "to contain any disclosure
relating to the chemical processes at work, the monitoring
of process variables, or the means of setting off an alarm or
adjusting an alarm system. All that it provides is a formula
for computing an updated alarm limit."
41
Source: Ateneo Law Journal
SECTION 22.2
Patentability of Computer – Implemented
Business Method
In State Street Bank & Trust Co. v. Signature
Financial Group [(149 F. 3d 1368 (1998)] the U.S.
Circuit Court of Appeals found patentable, a system
(known as Hub and Spoke) that facilitates a structure
whereby mutual funds (spokes) pool their assets in
an investment portfolio (Hub) engaged as a
partnership. In effect a machine programmed with
the Hub and Spoke software which produces a
“useful, concrete, and tangible results” is statutory
subject matter, even if the result is expressed in
numbers, such as prices profit, percentage, cost or
loss. 43
SECTION 22.2
Computer-Implemented Invention
Diamond v. Diehr (continued)
Held: In contrast, the respondents here do not seek to patent a
mathematical formula. Instead, they seek patent protection for a
process of curing synthetic rubber. Their process admittedly
employs a well-known mathematical equation, but they do not
seek to preempt the use of that equation. Rather, they seek only to
foreclose from others the use of that equation in conjunction with
all of the other steps in their claimed process. These include
installing rubber in a press, closing the mold, constantly
determining the temperature of the mold, constantly recalculating
the appropriate cure time through the use of the formula and a
digital computer, and automatically opening the press at the
proper time. Obviously, one does not need a "computer" to cure
natural or synthetic rubber, but if the computer use incorporated
in the process patent significantly lessens the possibility of
"overcuring" or "undercuring," the process as a whole does not
42
thereby become unpatentable subject matter.
Source: Ateneo Law Journal
SECTION 22.2
The court cited the following examples that would fit into this
category:
“In Alappat, we held that data, transformed by a machine
through a series of mathematical calculations to produce a smooth
waveform display on a rasterizer monitor, constituted a practical
application of an abstract idea (a mathematical algorithm, formula, or
calculation), because it produced ‘a useful, concrete and tangible
result’ – the smooth waveform.
Similarly, in Arrythmia Resarch Technology Inc. v Corazonix
Corp (citation omitted) we held that the transformation of
electrocardiograph signals from a patient’s heartbeat by a machine
through a series of mathematical calculations constituted a practical
application of an abstract idea (a mathematical algorithm, formula, or
calculation), because it corresponded to a useful, concrete or tangible
thing – the condition of a patient’s heart.
44
11

SECTION 22.2
HELD: Today, we hold that the transformation of data
representing discrete dollar amounts, by a machine
through a series of mathematical calculations into a
final share price, constitutes a practical application of a
mathematical algorithm, formula, or calculation,
because it produces ‘a useful, concrete and tangible
result’ – a final share price momentarily fixed for
recording and reporting purposes and even accepted
and relied upon by regulatory authorities and in
subsequent trades.” The basic rule stated in this
decision is that its process that meets the machine
transformation test is patentable.
SECTION 22.2
Patentability of Computer – Implemented
Business Method
Bilski v. Kappos (continued)
(a) initiating a series of transactions between said
commodity provider and consumers … wherein said
consumers purchase said commodity at a fixed rate
based upon historical averages, said fixed rate
corresponding to a risk position of said consumer;
(b) identifying market participants for said commodity
having a counter-risk position to said consumers; and
(c) initiating a series of transactions between said
commodity provider and said market participants at a
second fixed rate that said series of market participant
transactions balances the risk position of said series of
consumer transactions.
SECTION 22.2
Patentability of Computer – Implemented
Business Method
Bilski v. Kappos
The US Supreme Court on June 28, 2010 held that
Bilski’s method of hedging risk did not constitute
patent eligible subject matter because it was an
abstract idea. Allowing the petitioners to patent risk
hedging would preempt use of this approach in all
fields and would effectively grant a monopoly over an
abstract idea. The court rejected the “useful,
concrete and tangible result” test of State Street.
Claim 1 in Bilski’s patent application reads:
A method of managing the consumption risk costs of
45 a commodity sold by a commodity provider at a fixed 46
price comprising …
SECTION 22.2
Patentability of Computer – Implemented
Business Method
Bilski v. Kappos (continued)
On the same day as the Supreme Court’s decision, the USPTO
issued interim guidance to examiners as to how to examine
method claims. After noting that the Supreme Court’s decision
had held that at least some business method claims could be
patent eligible, the guidance went on to state that examiners
should continue to use the machine or transformation test as
the primary step in their analysis of patent eligibility of method
claims. If the machine or transformation test is met, a claim
should be rejected only if there is a clear indication that the
method is directed to an abstract idea. If the method claim
failed to meet the machine or transformation test, the claim
should be rejected unless there is a clear indication that the
method is not directed to an abstract idea. If a claim is rejected
47
on this ground the applicant has an opportunity to explain why 48
the claimed method is not drawn to an abstract idea.
12
SECTION 22.2
Patentability of Computer – Implemented
Business Method
Bilski v. Kappos (continued)
There is no absolute bar on patent protection for business
methods, but to be patent eligible, the claims should be drafted
fairly narrowly to avoid claiming all practical applications of the
idea underlying the invention (confining the claims to a
particular field of use is not sufficient by itself), and avoid
having a mathematical formula as the sole point of novelty. If it
is the case that the method can only be performed by a
computer it is probably also useful to set this out and include
sufficient of the logic that the computer must use to meet the
requirements of 35 USC § 112 first and sixth paragraphs. The
SC concluded that the machine transformation test is not only
the test to determine patentability under Sec. 101, U.S. Patent.
49
SECTION 22.3 – Methods for treatment
of the human or animal body by surgery
or therapy and diagnostic methods
practiced on the human or animal body.
This provision shall not apply to
products and composition for use in
any of these methods.
51
SECTION 22.2
Patentability of Computer – Implemented
Business Method
Bilski v. Kappos (continued)
So what an inventor needs to do is think in terms of a system to
come up with a method of doing business. A true system will
have system components, perhaps a computer, server and
communications equipment. The various components will be
connected to form some type of overall architecture that can be
defined, much as saying A is connected to C through the use of
B, or something like that. Such systems are also typically
characterized by the presence of computer software that will be
used to carry out the process, manipulate data or information
and return some type of result, or perhaps control some other
type of equipment that is connected to the system. The key is
that you need to think in terms of the technology that can be
exploited in order to carry out the desired business objective.
Merely reciting disembodied steps that may or may not require 50
technology will not net you a business method patent.
SECTION 22.4 - PLANT VARIETIES OR
ANIMAL BREEDS OR ESSENTIALLY
BIOLOGICAL PROCESS FOR THE
PRODUCTION OF PLANTS OR ANIMALS.
Are Animal Varieties Patentable?
NO EXCEPT MAN MADE
The ‘oncomouse” (a mouse into which has been
introduced a cancer-forming gene, making it a
valuable experimental animal for testing anti-
cancer drugs) is “man-made” and is clearly
patentable under U.S. law. There is yet no
jurisprudence in the Philippines on this matter.
52
13
SECTION 22.4 – PLANT VARIETIES OR ANIMAL
BREEDS OR ESSENTIALLY BIOLOGICAL
PROCESS FOR THE PRODUCTION OF PLANTS
OR ANIMALS.
SECTION 22.5 – AESTHETIC CREATIONS; AND
Are Plant Varieties Patentable?

SECTION 22.6 – ANYTHING WHICH IS

In the Philippines, they are not CONTRARY TO PUBLIC ORDER OR MORALITY.
patentable but will be the subject of (SEC. 8, R.A. NO. 165A)
sui generis protection. At present,
this is covered by Republic Act. 9168,
The Plant Varieties Act.

53 54

Conditions of Patentability SECTION 23 - CONDITIONS OF PATENTABILITY

• Novelty
• Novelty – When is the invention not new? if it is not
part of the prior art. Prior art consists of
• Inventive Step everything which has been disclosed or
• Industrial Applicability used in public, or sold in the market before
the patent application for the invention is
filed; except any disclosure by the inventor
(e.g. demonstrating the use of the invention
in a trade fair) within 12 months preceding
the filing date of the application.
55 56

14

PRIOR ART
Rule 204 (a) information is deemed
available to the public, thus part of the
prior art, when it is not confidential &
not restricted to use by a selective
group.
57
PRIOR ART
• Disclosure in writing
Newspaper advertisements of “electric welded
wire mesh” which neither state or describe the
particular wire mesh being referred to nor mention
the machine which produced the wire mesh is not
prior art vis-à-vis the application.
• Disclosure by use
Prior use that would fall in the definition of prior
art is such use of the invention in public, generally
for profit, and the use maybe by only one or a
limited numbers of persons. An offer to sell
constitutes use.
59
PRIOR ART
Anticipation by prior knowledge
• as applied to a combination novelty means that a
thing
is new unless ALL ELEMENTS in a combination,
except for significant differences, can be found in
a single prior description or structure where they
as substantially the same work in the same way.
• as applied to a process
all the elements or steps in question must be
unequivocally met, element by element, in the
correct sequence or order, and under the same
conditions these steps are carried out by the
process. 58
PRIOR ART – Section 25
Non – Prejudicial disclosure: Disclosure of
information contained in the application
during 12 months preceding the filing date or
priority date shall not prejudice novelty in the
following cases:
a) disclosure by the inventor, or by a 3rd
person with his consent
b) erroneous publication by a patent office of
the inventors application or an application
filed without the inventor’s consent based on
the information obtained from the inventors
60
15

Section 26
An invention involves an inventive
step if, having regard to the prior art
it is not obvious to a person to a
person skilled in the art at the time
of the filing date or priority date of
the application.
61
Dann v. Johnston 425 US 219 (1976)
The Supreme Court affirmed the decision of the
Commissioner of Patents rejecting the application on
the ground of obviousness. The application is
described as a machine system for automatic record
keeping of bank checks and deposits. The system
permits a bank to furnish customers with subtotals of
various categories of transactions completed in
connection with the customer’s single account, thus
savings the customer the time and/or expense of
conducting this bookkeeping himself. It noted that the
use of data processing equipment and computer
programs in the banking industry is extensive.
Automatic data processing equipment employing
digital computers have been in the banking system and
the processing of checks, etc.
63
Conditions of patentability (continued)
• Inventive step
- the invention should NOT BE OBVIOUS
to a person skilled in the art, i.e. who is
familiar with the technology taught by the
application at the time it is filed.
Who is a person skilled in the art? a
person presumed to be aware of what was
common general knowledge in art of the
relevant date and all references to the
pertinent art and of all art reasonably
relevant to the problems with which the
62
inventor was involved
U.S. Jurisprudence on OBVIOUSNESS
In Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 86 S. Ct.
684, 15 L. Ed. 2d 545 (1966), the Court set out a framework for
applying the statutory language of §103 (relating to
obviousness), viz:
“Under § 103, the scope and content of the prior
art are to be determined; differences between the
prior art and the claims at issue are to be
ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background,
the obviousness or nonobviousness of the subject
matter is determined. Such secondary
considerations as commercial success, long felt
but unsolved needs, failure of others, etc., might
be utilized to give light to the circumstances
surrounding the origin of the subject matter
sought to be patented.” Id., at 17-18, 86 S. Ct. 684,
64
15 L., Ed. 2d 545.”
16
U.S. Jurisprudence on OBVIOUSNESS
For over a half century, the Court has held that a “patent for a
combination [*416] which only unites old elements with no
change in their respective functions … obviously withdraws what
already is known into the field of its monopoly and diminishes
the resources available to skillful men.”
In Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S.
57, 90 S. Ct. 305, 24 L. Ed. 2d 258 (1969), the Court elaborated on
this approach. The subject matter of the patent before the Court
was a device combining two pre-existing elements: a radiant-
heat [*417] burner and a paving machine. The device, the Court
concluded, did not create some new synergy: The radiant-heat
burner functioned just as a burner was expected to function; and
the paving machine did the same. The two in combination did no
more than they would in separate, sequential operation. Id., at
60-62, 90 S. Ct. 305, 24 L. Ed. 2d 258. In those circumstances,
“while the combination of old elements performed a useful
function, it added nothing to the nature and quality of the radiant-
heat burner already patented,” and the patent failed under § 103.
Id., at 62,90 S. Ct. 305, 24 L. Ed. 2d 258 (footnote omitted).
U.S. Jurisprudence on OBVIOUSNESS
United States v. Adams
The Court relied upon the corollary principle that when the prior
art teaches a way from combining certain known elements,
discovery of a successful means of combining elements which the
prior art refrained from teaching, because combining them carried
risks, is more likely to be nonobvious. The fact that the electrodes
he employed worked together in an unexpected and fruitful
manner supported the conclusion that Adam’s design was not
obvious to those skilled in the art.
U.S. Jurisprudence on OBVIOUSNESS
Finally, in Sakraida v. AG Pro, Inc., 425 U.S. 273, 96 S. Ct. 1532, 47
L. Ed. 2d 784 (1976), the Court derived from the precedents the
conclusion that when a patent “simply arranges old elements with
each performing the same function it had been known to perform”
and yields no more than one would expect from such an
arrangement, the combination is obvious. Id., at 282, 96 S. Ct.
1532, 47 L. Ed. 2d 784.
In United States v. Adams, 383 U.S. 39, 40, 86 S. Ct. 708, 15 L. Ed.
2d 572, 174 Ct. Cl. 1293 (1966, the Court considered the
obviousness of a “wet battery” that varied from prior designs in
two ways: It contained water, than the acids conventionally
employed in storage batteries; and its electrodes were magnesium
and cuprous chloride, rather than zinc and silver chloride. The
Court recognized that when a patent claims a structure already
known in the prior art that is altered by the mere substitution of
one element for another known in the field, the combination must
do more than yield a predictable result. It nevertheless rejected
65 the Government’s claim that Adam’s battery was obvious. 66
ILLUSTRATION
IS INVENTION C PATENTABLE?
PENCIL ERASER PENCILW/ ERASER
A B C
67 68
17
Conditions of patentability (continued)
The steps of mixing, kneading, forming into strips,
cutting, gelatinizing, and frying were standard or basic
steps in the process of making ready-to-eat vermicelli, and
variations of shape, size, length, ingredients, implements,
etc., were determined by the particular characteristics or
kind of vermicelli that one desired to prepare.
No new or unexpected result or advantage was seen to
emanate from the combination of the old and well-known
steps. The objective of the chemical process was to
provide “a peculiar taste to the palate,” as distinguished
from the purpose to prevent the strips from adhering to
each other when heated. The particular sensation
produced was not a new or unexpected result but merely a
manifestation of characteristic inherent in and deducible
from the corrugated or crooked form of the vermicelli
strips. (Decision No. 695 (Mar. 6, 1972)).
69
Source: Ateneo Law Journal
Aguas v. De Leon
The Supreme Court in Aguas v. De Leon affirmed the decision
of the Court of Appeals, viz:
We find that plaintiff-appellee has introduced an improvement
in the process of tile-making which proceeds not merely from
mechanical skill. Said improvement consisting, among other
things, in the new critical depth, lip width, easement and field of
designs of the new tiles. The improved lip width of appelle’s tiles
ensures the durability of the finished product preventing the
flaking off of the edges. The easement caused by the inclination of
the protrusion on his moulds attain an optimum height so that the
engraving thereon would be deep enough to produce tiles for
sculptured and decorative purposes, strong enough,
notwithstanding the deep engravings, to be utilized for walling
purposes. The optimum thickness of appellee’s new tiles of only
I/8 of an inch at the deepest easement is a most critical feature,
suggestive of discovery and inventiveness, especially considering
that, despite said thinness, the freshly formed tile remains strong
enough for its intended purpose.
71
Source: Ateneo Law Journal
Conditions of patentability (continued)
The patentability of the product claim must be found in
the product itself. In EX Parte Icasiano, the Director of
Patents affirmed the Examiner’s rejection of the application
for a Bamboo Board which is Rigid, Solid, Light, and
Durable, as a the application Material for Building and
Construction Purposes, and which is Resistant to Heat,
Weather, Abrasion, and to Deteriorations Caused by
Fungus, Termites or other Insects. The Director ruled that
there could possibly be no invention in a boarding material
fashioned in practically the same way and possessed
basically of the same characteristics as plywood, the only
difference existing between the two boards being that,
while one was made from bamboo plys, the other was
fashioned from wood plys. The bamboo board constituted
no more than an extension of the original conception of
commercial plywood. For that extension, the skill of the
mechanic was sufficient; the creative genius of the inventor
was not necessary. (Decision No. 54 (May 30, 1952)). 70
Source: Ateneo Law Journal
Inventive Step (continued)
26.2. In the case of drugs and
medicines, there is no inventive step
if the invention results from the mere
discovery of a new form or new
property of a known substance which
does not result in the enhancement
of the known efficacy of that
substance, or the mere discovery of
any new property or new use for a
known substance, or the mere use of
a known process unless such known
process results in a new product that
employs at least one new reactant.
72
18
Inventive Step (continued)
26.2. (contd) for the purpose of
this clause, salts, esters, ethers,
polymorphs, metabolites, pure farm,
particle size, isomers, mixture of
isomers, complexes, combinations
and other derivatives of a known
substance shall be considered the
same substance, unless they differ,
significantly in properties with
regard to efficacy.
73
Inventive Step (continued)
CRITIQUE OF 26.2 as Amended
This would achieve the objective of the law to not
allow any other person to obtain a subsequent patent for
the new forms or derivatives. Second, the amendment
has the effect of broadening the scope of protection of
the patent, thus widening the breadth of the patentee’s
monopoly over the product to include its so-called
derivatives. Clearly, this would benefit the patentee
rather than the consumer, a result not sought by the
legislator.
75
Inventive Step (continued)
CRITIQUE OF 26.2 as Amended
There are important considerations that render this
amendment legally objectionable, viz: First, the
amendment expanded the concept of a known substance
to include even substances different in chemical
structure and physical properties, among others, from
those disclosed at the filing date or priority date of the
patent application covering the known substance. Even if
these new forms or derivatives do not exist yet, or their
existence is not yet determined to be probable (such as
polymorphs and optical isomers), are not yet determined
to be synthetically obtainable (such as complexes) or
capable of isolation (such as pure forms).
74
Inventive Step (continued)
CRITIQUE OF 26.2 as Amended
Third, it renders futile the carrying out of a so-
called search of patent documents by a patent applicant
to determine if his invention is new and inventive. This is
because the claims of the patent relating to a drug or
medicine may not include their derivatives in the
disclosures of the patent but would still be considered
within the scope of the protection of the patent. The
same difficulty will be encountered by patent examiners
in carrying out the substantive examination of patent
applications.
Fourth, a businessman’s due diligence
assessment regarding the availability of a certain
pharmaceutical product for public use will be seriously 76
hampered.
19
 Conditions of patentability (continued) Conditions of patentability (continued)

• Industrial applicability • Industrial applicability of gene

sequence
- the invention cannot be purely
theoretical. If the invention relates to a
product, it must be capable of being made.
If it relates to a process, it must be capable
of being used.
77
- the high Court of justice in the UK, in Eli Lilly v.
Human Genome, stated:
In cases where a substance, naturally occuring in
the human body, is identified… but either its function
is not known or it is complex and is incompletely
understood and no disease…has been identified as
attributable to the excess or deficiency of the
substance and no other practical use is suggested for
the substance, then industrial applicability cannot be
acknowledged.
78

Disclosure and description of the

Patent Application invention:
Sec. 32. The application
The application shall disclose the invention
32.1 – A patent application shall be in Filipino or in a manner sufficiently clear and complete
English and shall contain the following:
for it to be carried out by a person skilled
(a) A request for the grant of patent;
in the art (Sec. 35). It shall contain an
(b) A description of the invention; enabling disclosure i.e. a detailed
(c) Drawings necessary for the description of at least one way of doing the
understanding of the invention;
invention using working examples. With
(d) One or more claims; and respect to application relating to biological
(e) An Abstract.
molecules and microorganisms, a culture of
32.2 – No patent my be granted unless the application microorganisms should be deposited in a
identifies the inventor. If the applicant is not the inventor,
the Office may require him to submit said authority. (Sec. recognized international depository
13, R.A. No. 165a) 79 authority. 80

20
 Disclosure and description of the
invention:
Extent of protection and interpretation of claims.
- The extent of protection conferred by the patent
shall be determined by the claims, to be interpreted
in the light of the description and drawings….taking
into account the element, which are equivalent to
the elements expressed in the claims.
Section 36 - The Claims. 36.1 The application shall contain
one (1) or more claims which shall define the matter for
which protection is sought. Each claim shall be clear and
concise, and shall be supported by the description.
36.2 The regulations shall prescribe the manner of the
presentation of claims (n).
81
Patent Application (continued)
Where? and When?
• novelty
• Right of priority
• Filing date
Section 40 – Filing Date Requirements. 40.1 The filing
date of a patent application shall be the date of
receipt by the Office of at least the following elements:
a) An express or implicit indication that a Philippine
Patent is sought;
b) Information identifying the applicant; and
c) Description of the invention and one (1) or more
claims in Filipino or English
40.2 If any of these elements is not submitted
within the period set by the Regulations, the
application shall be considered withdrawn. 83
Patent Application (continued)
Who may file?
• National Treatment
• Inventor or legal representative
Where? and When?
Sec. 28. Right to a Patent. - The right to a patent belongs to
the inventor, his heirs, or assigns. When two (2) or more
persons have jointly made an invention, the right to a
patent shall belong to them jointly. (Sec. 10, R. A. No. 165a)
• first-to-file rule
Inventions created pursuant to a commission by an
employee
Sec. 29 – First to File Rule. If two (2) or more persons have
made the invention separately and independently of each
other, the right to the patent shall belong to the person who
filed an application for such invention, or where two or
more applications are filed for the same invention, to the
applicant who has the earlier filing date or, the earliest
priority date.
82
Patent Application (continued)
Sec. 35. Disclosure and Description of the Invention.
35.1. Disclosure. - The application shall disclose the invention in a
manner sufficiently clear and complete for it to be carried out by a
person skilled in the art. Where the application concerns a
microbiological process or the product thereof and involves the use
of a micro-organism which cannot be sufficiently disclosed in the
application in such a way as to enable the invention to be carried out
by a person skilled in the art, and such material is not available to the
public, the application shall be supplemented by a deposit of such
material with an international depository institution.
35.2. Description. - The Regulations shall prescribe the contents of
the description and the order of presentation. (Sec. 14, R. A. No. 165a)
Sec. 36. The Claims 36.1. The application shall contain one (1) or
more claims which shall define the matter for which protection is
sought. Each claim shall be clear and concise, and shall be supported
by the description.
36.2. The Regulations shall prescribe the manner of the presentation
of claims.
84
21
Patent Application (continued)
Sec. 67. Patent Application by Persons Not Having the Right to a
Patent. - 67.1. If a person referred to in Section 29 other than the
applicant, is declared by final court order or decision as having the
right to the patent, such person may, within three (3) months after the
decision has become final:
(a) Prosecute the application as his own application in place of the
applicant;
(b) File a new patent application in respect of the same invention;
(c) Request that the application be refused; or
(d) Seek cancellation of the patent, if one has already been issued.
67.2. The provisions of Subsection 38.2 shall apply mutatis mutandis
to a new application filed under Subsection 67.1(b). (n)
Sec. 68. Remedies of the True and Actual Inventor. - If a person, who
was deprived of the patent without his consent or through fraud is
declared by final court order or decision to be the true and actual
inventor, the court shall order for his substitution as patentee, or at
the option of the true inventor, cancel the patent, and award actual
and other damages in his favor if warranted by the
circumstances. (Sec. 33, R. A. No. 165a)
85
Examination Procedure
• Publication of patent APPLICATION
- comments (not opposition) of third
parties
Sec. 47. Observation by Third Parties. -
Following the publication of the patent
application, any person may present
observations in writing concerning the
patentability of the invention. Such
observations shall be communicated to the
applicant who may comment on them. The
Office shall acknowledge and put such
observations and comment in the file of the
application to which it relates. (n)
87
Examination Procedure
• Formality Examination
• Classification and Search
• Confidentiality before publication
• Publication of patent APPLICATION
- rights (inchoate) after publication
Sec. 46. Rights Conferred by a Patent Application After Publication. - The
applicant shall have all the rights of a patentee under Section 76 against
any person who, without his authorization, exercised any of the rights
conferred under Section 71 of this Act in relation to the invention claimed
in the published patent application, as if a patent had been granted for
that invention: Provided, That the said person had:
46.1. Actual knowledge that the invention that he was using was the
subject matter of a published application; or
46.2. Received written notice that the invention that he was using was the
subject matter of a published application being identified in the said
notice by its serial number: Provided, That the action may not be filed
until after the grant of a patent on the published application and within 86
four (4) years from the commission of the acts complained of. (n)
Examination Procedure
• Publication of patent APPLICATION
- Term of patent
Sec. 54. Term of Patent. - The term of a patent shall be twenty (20) years
from the filing date of the application. (Sec. 21, R. A. No. 165a)
- Annual Fees
Sec. 55. Annual Fees. - 55.1. To maintain the patent application or patent,
an annual fee shall be paid upon the expiration of four (4) years from the
date the application was published pursuant to Section 44 hereof, and on
each subsequent anniversary of such date. Payment may be made within
three (3) months before the due date. The obligation to pay the annual
fees shall terminate should the application be withdrawn, refused, or
cancelled.
55.2. If the annual fee is not paid, the patent application shall be deemed
withdrawn or the patent considered as lapsed from the day following the
expiration of the period within which the annual fees were due. A notice
that the application is deemed withdrawn or the lapse of a patent for non-
payment of any annual fee shall be published in the IPO Gazette and the
lapse shall be recorded in the Register of the Office.
55.3. A grace period of six (6) months shall be granted for the payment of
the annual fee, upon payment of the prescribed surcharge for delayed
payment. (Sec. 22, R. A. No. 165a) 88
22
Examination Procedure (continued)
• Request for Substantive Examination
Sec. 48. Request for Substantive Examination. -
48.1. The application shall be deemed withdrawn unless
within six (6) months from the date of publication under
Section 41, a written request to determine whether a
patent application meets the requirements of Sections 21
to 27 and Sections 32 to 39 and the fees have been paid
on time.
48.2. Withdrawal of the request for examination shall be
irrevocable and shall not authorize the refund of any
fee. (n)
• Amendment of Application
89
In case of Refusal by examiner
• appeal to Director of Patents
• appeal to the Director General of
the IPO
• appeal to Court of Appeals; to the
Supreme Court
91
Examination Procedure (continued)
• Cancellation of Patents
Sec. 61. Cancellation of Patents. -
61.1. Any interested person may, upon payment of the required fee, petition
to cancel the patent or any claim thereof, or parts of the claim, on any of the
following grounds:
(a) That what is claimed as the invention is not new or patentable;
(b) That the patent does not disclose the invention in a manner sufficiently
clear and complete for it to be carried out by any person skilled in the art; or
(c) That the patent is contrary to public order or morality.
61.2. Where the grounds for cancellation relate to some of the claims or
parts of the claim, cancellation may be effected to such extent only. (Secs.
28 and 29, R. A. No. 165a)
• Committee of Three
Sec. 64. Committee of Three. - In cases involving highly technical issues, on
motion of any party, the Director of Legal Affairs may order that the petition
be heard and decided by a committee composed of the Director of Legal
Affairs as chairman and two (2) members who have the experience or
expertise in the field of technology to which the patent sought to be
cancelled relates. The decision of the committee shall be appealable to the
Director General. (n) 90
Letters Patent
Illustration
92
23
 Rights of Patentees
TOPICS FOR DISCUSSION
A. Rights of patentees
B. Infringement of patents
93
Limitations to Rights of Patentees
Limitations to Rights of Patentees (Sec. 72)
- Exhaustion of patent rights:
where the patented product was put on the
market in the Philippines by the owners of the
patent. (This prohibits parallel importation)
EXCEPT drugs and medicines where patent
rights are exhausted after a drug or medicine
has been introduced in the Philippines or
anywhere else in the world by the patent owner
The right to import the drugs and
medicines contemplated in this section shall be
available to any government agency or any
private party
95
• What are the exclusive rights conferred to the
owner of the patent?
- the making, using offering for sale, selling or
importing
• a patented product,
• a product obtained thru a patented
process or the use of a patented process.
• To assign or transfer by succession the patent
and to conclude licensing contracts for the
same.
94
Exhaustion of patent rights
US v. Unives Lens Co., et. al 316 U.S. 241
Where one has sold an uncompleted article, which because it embodies
essential features of his patented invention, destined the article to be finished
by the purchaser in conformity to the patent ,he has sold his invention so far
as it may be embodied in that particular article.
FACTS: Unives licenses Lens Co., to manufacture its patented lens blanks
and sell licenses of the Unives upon Lens Co’s payment to Unives of royalty
of 50 cents a pair. The essential or inventive feature of the Unives Lens
Patents was the fusing together of different lens segments to create bi- and
tri- focal lenses.
The licensees of Unives are: 1) wholesalers authorized to grind and
polish the blanks and sell them at prices fixed by Unives to prescription
retailers, 2) prescription licensees who prescribe and adjust glasses for
customers at price fixed by Unives, 3) finishing retailers. Each blank is
composed of two or more pieces of glass of different refractive power of such
size, shape and composition that when fused together in the blank is said to
conform to the claims of Unives’ patents. Retailers purchase from Lens Co.
grind and polish, adjust lenses in frames, and sell them at a price fixed by96
Unives.
24
Limitations to Rights of Patentees
Exhaustion of patent rights
US v. Unives Lens Co., et. al 316 U.S. 241
HELD: The sale of the blanks by the patentee to a finisher
the only use to which it could be put and the only object of
the sale is to enable the latter to grind and polish for use
as a lens by the prospective consumer constitutes a
complete transfer of the ownership of the blanks including
the practice of the final stage of the patent procedure.
Unives has no longer control to fix the price. The added
stipulation by the patentee fixing the resale prices derives
no support from the patent and must stand on the same
footing of unpatented commodities; as such the price of
the patented lenses after the sale to the licensees of Unives
in interstate commerce will be regulated by the Sherman
Act known as the Anti-Trust Law. 97
Limitations to Rights of Patentees
Exhaustion of patent rights
Quanta Computer, Inc., etal. v. L.G. Electronics, Inc.
A separate agreement (Master Agreement) required Intel to
give its customers written notice that the license does not
extend to a product made by combining, an Intel Product with
a non-Intel product, and provided that a breach of the
agreement would not affect the License Agreement.
Petitioner computer manufacturers (Quanta) purchased
microprocessors and chipsets from Intel. Quanta then
manufactured computers using Intel parts in combination with
non-Intel parts, but did not modify the Intel components. LGE
sued, asserting that this combination infringed the LGE
patents.
99
Limitations to Rights of Patentees
Exhaustion of patent rights
Quanta Computer, Inc., etal. v. L.G. Electronics, Inc.
The longstanding doctrine of patent exhaustion limits the
patent rights that survive the initial authorized sale of a
patented item. Respondent (LGE) purchased, inter alia, the
computer technology patents at issue (LGE Patents): One
discloses a system for ensuring that most current data are
retrieved from main memory, one relates to the coordination of
requests to read from and write to main memory, and one
addresses the problem of managing data traffic on a set of
wires, or “bus,” connecting two computer components. LGE
licensed the patents to Intel Corporation (Intel), in an
agreement (License Agreement) that authorizes Intel to
manufacture and sell microprocessors and chipsets using the
LGE Patents (Intel Products) and that does not purport to alter
patent exhaustion rules.
98
Limitations to Rights of Patentees
Exhaustion of patent rights
Quanta Computer, Inc., etal. v. L.G. Electronics, Inc.
HELD: The Intel Products embodied the patents here. Univis governs this
case. There, exhaustion was triggered by the sale of the lens blanks because
their only reasonable and intended use was to practice the patent and
because they “embodie[d] essential features of [the] patented invention,” 316
U.S., at 249-51. Each of those attributes is shared by the microprocessors and
chipsets Intel sold to Quanta under the License Agreement. First, LGE has
suggested no reasonable use for the Intel Products other than incorporating
them into computer systems that practice the LGE Patents: A microprocessor
or chipset cannot function until it is connected to buses and memory. And as
in Univis, the only apparent object of Intel’s sales was to permit Quanta to
incorporate the Intel Products into computers that would practice the patents.
Second, like the Univis lens blanks, the Intel Products constitute a material
part of the patented invention. The only step necessary to practice the patent
is the application of common processes or the addition of standard parts.
Everything inventive about each patent is embodied in the Intel Products. It is
also stressed that nothing in the License Agreement limited intel’s ability to
sell its products practicing these patents. LGE’s attempts to distinguish 100
Univis are unavailing.
25
Limitations to the rights of patentees
- the exploitation of the patent is exclusively for
PRIVATE USE; or solely for scientific research and
experiment; Example: reverse engineering
- the use consists of the preparation for individual
cases, by a pharmacist or a medical professional of
a medicine in accordance with a medical
prescription and after the drug or medicines has
been put in the market by the patent owner in the
Philippines or any where else in the world.
- use in transit
Limitations to the rights of patentees
Roche v. Bolar Pharmaceutical, ibid.
• In the Philippines a different rule is followed:
In case of drugs and medicines Cheaper Medicine Law the
testing, using, making of selling the invention for the
purpose related to the development and submission of
information and issuance of government approvals required
by law will not be deemed a violation of the rights of the
patentee. (Section 72.4, Rep. Act 8293 as amended by Rep.
Act 9502). Is the submission of application for registration of
the pharmaceutical product with the FDA long before the
lapse of the patent justify conducting the testing using,
making of selling, the invention to obtain information
required by FDA to register the product? There is no
jurisprudence on this issue.
Limitations to the rights of patentees
- for scientific research and experiment
Roche v. Bolar Pharmaceutical, 773 F. 2d 858, April 23, 1984
FACTS: Bolar obtained 5 kilograms of flurazepam to obtain stability
data dissolution rates bioequivalency and blood serum studies
necessary for New Drug Applicants to the USFDA.
HELD: The US Court of Appeals, Federal Circuit, ruled that the use of
flurazepam hcl to provide FDA required test data is an
infringement of the ‘053 Patent. Unlicensed experiments
conducted with a view to the adaptation of the patented invention
to the experimentors business is a violation of the right of the
patentee to exclude others from using the patented invention.
Bolar’s use does not constitute experimental use. Bolar’s use is
for business reasons … not for amusement, satisfy idle curiosity,
or strictly for philosophical inquiry. Regardless the “de minimis
defense” the act ruled that only 5kg was bought does not
101 constitute de minimis! It is not so trifle on its economic effect.102
Limitations to the rights of patentees
- TERRITORIALITY: those rights have force and
effect only within Philippine territory
- TERM: 20 years from date of filing; not renewable
- PRIOR USER in good faith
Any prior user, who, in good faith was using
the invention or has undertaken serious preparations
to use the invention in his enterprise or business
(Sec. 73, RA 8293)
- COMPULSORY licensing
103 104
26
 Limitations; Compulsory Licensing (Continued)
Limitations; Compulsory Licensing
Where there is national emergency; or is
required by national security, nutrition,
- Patents may be exploited without the
health or the development of vital sectors
authority of the patentee through a
of the economy; or the manner of
compulsory license (filed with the IPO
exploitation of the patent by the owner is
after exhausting attempts to obtain a
determined/ to be anti-competitive; or to
voluntary license) on any of these
exploit a “second” patent which cannot be
grounds:
used without infringing the “first” patent if
the exploitation of the second patent
involves an important technical advance of
considerable economic significance.
105 106

Special Procedure on the issuance of

Compulsory License for drugs and medicines
Compulsory License for the
manufacture and Export of drugs:
Sec. 93-A. The Director General of the Intellectual Property
Office, upon the written recommendation of the Secretary of
the Department of Health, shall, upon filing of a petition, grant
“93-A.2. A compulsory license shall also be
a special compulsory license for the importation of patented
drugs and medicines. which shall be an additional special available for the manufacture and EXPORT OF
alternative procedure to ensure access to quality affordable DRUGS and medicines to any country having
medicines and shall be primarily for domestic consumption: insufficient or no manufacturing capacity in the
Provided, That adequate remuneration shall be paid to the
pharmaceutical sector to address public health
patent owner. The grantee of the license shall exercise
reasonable measures to prevent the re-exportation of the problems: Provided, That, a compulsory license
products imported under this provision. has been granted by such country or such
xxx country has, by notification or otherwise, allowed
importation into its jurisdiction of the patented
No court, except the Supreme Court, shall issue any TRO,
preliminary injunction, or any provisional remedy that will drugs and medicines from the Philippines in
prevent the grant of the special compulsory license. compliance with the TRIPS Agreement.
107 108

27
Infringement of Patents (Sec. 76) Infringement of Patents

• What constitutes infringement of patents?

Disclosure and description of the
invention:
- the making, using offering for sale,
selling or importing: The application shall disclose the invention in a manner
sufficiently clear and complete for it to be carried out by
a person skilled in the art (Sec. 35). It shall contain an
• a patented product,
enabling disclosure i.e. a detailed description of at least
one way of doing the invention using working examples.
• or a product obtained from a (NOTE: Sec. 61 provides that failure to comply with Sec.
patented process 35 would be a ground to cancel the patent.)

• without the authorization of the With respect to application relating to biological

patentee. molecules and microorganisms, a culture of
microorganisms should be deposited in a recognized
international depository authority.
109 (NOTE: The Philippines is a member of the Budapest 110
Treaty on the International Recognition of the Deposit of
Microorganisms for the Purposes of Patent Procedure)

Infringement of Patents Infringement of Patents

The claims:
The application shall contain one or more claims
which shall define the matter for which protection
is sought. Each claim shall be clear and concise
and shall be supported by the description
(Sec. 36.1).
111
The claims:
The claims are the vital part of a patent. They
define the inventor’s monopoly. Claims are
likened to the boundaries staked out on a piece
of land by a prospector. Everything within the
boundary the prospector claims are his and
nobody can come within the boundary without
paying tribute to the prospector. The public is
informed as to what the inventor claims as his
invention and as to what the public must not
make, use, or sell.
112
(United Laboratories v. Merck, Decision No. 802, June 10,
1974)

28
Infringement of Patents
Extent of protection and interpretation
of claims. (Sec. 75)
The extent of protection conferred by the patent
shall be determined by the claims, to be
interpreted in the light of the description and
drawings….taking into account the element,
which are equivalent to the elements expressed
in the claims. So that a claim shall be
considered to cover not only all the elements as
expressed therein, but also equivalents. (please
read Winans v. Denmead, 56 U.S. (15 How) 330.
113
Infringement of Patents
Literal Infringment
Godines v. Court of Appeals
G.R. No. 97343, September 13, 1993
In using the literal infringement as a test, “xxx resort must be
had, in the first instance, to the words of the claim. If accused
matter clearly falls within the claim, infringement is made out
and that is the end of it.” To determine whether the particular
item falls within the literal meaning of the patent claims, the
Court must juxtapose the claims of the patent and the
accused product within the overall context of the claims and
specifications, to determine whether there is exact identity of
all material elements.
115
Infringement of Patents
Interpretation of claims. (Sec. 75)
Autogiro Company of America v. United States Court of Claims
384 F.2d 391, October 13, 1967
“Claims cannot be clear and unambiguous on their face. The very nature of words would
make a clear and unambiguous claim a rare occurrence. Writing on statutory interpretation,
Justice Frankfurter commented on the inexactitude of words:
They are symbols of meaning. But unlike mathematical symbols, the phrasing of a
document, especially a complicated enactment, seldom attains more than approximate
precision. If individual words are inexact symbols, with shifting variables, their
configuration can hardly achieve invariant meaning or assured definiteness.”
The necessity for a sensible and systematic approach to claim interpretation is axiomatic.
The Alice-in-Wonderland view that something means whatever one chooses it to mean
makes for enjoyable reading, but bad law. Claims are best construed in connection with the
other parts of the patent instrument and with the circumstances surrounding the inception
of the patent application.
In deriving the meaning of claim, we inspect all useful documents and reach what Justice
Holmes called the “felt meaning” of the claim. In seeking the goal, we make use of three
parts of the patent: the specification, the drawings, and the file wrapper. 114
Doctrine of Equivalents
Autogiro Company v. United States, ibid
If the claims do not read literally on the accused
structures, infringement is not necessarily ruled out. The
doctrine of equivalence casts around a claim a penumbra
which also must be avoided if there is to be no
infringement. It provides that a structure infringes,
without there being literal overlap, if it performs
substantially the same function in substantially the same
way for substantially the same purpose as the claims set
forth. Equivalence is the obverse of the discounting of
literal overlap. The latter is to protect the accused; the
former to protect the patentee. The rational behind
equivalence was set forth by the Supreme Court in
Graver Tank & Mfg. Co. v. Linde Air Products Co., supra
339 US at 607, 70 S.Ct. at 856, 94 L.Ed. 1097. 116
29
Doctrine of Equivalents
An infringement takes place when a device
appropriates a prior invention by
incorporating its innovative concept, and
although with some modification and
change, performs substantially the same
function in substantially the same way to
achieve substantially the same result.
(Graver Tank & Manufacturing v. Linde Air
Products, 339 US 605, 1950; Godines v.
Court of Appeals, 226 SCRA 338; Smith
Kline v. CA, 409 SCRA 33).
117
Doctrine of Equivalents
Winans v. Denmead
The exclusive right to the thing patented is not
secured, if the public are at liberty to make
substantial copies of it, varying its form or
proportions. And therefore the patentee, having
described his invention, and shown its
principles, and claimed it in that form which
most perfectly embodies it, is, in contemplation
of law, deemed to claim every form in which his
invention may be copied, unless he manifests an
intention to disclaim some of those forms.
119
Doctrine of Equivalents
Winans v. Denmead
The invention relates to the body of the car for the transportation
of coal. The structure described by this patent, is the body of a
burden railroad car made of sheet iron the upper part being
cylindrical, and the lower part in the form of a frustum of a cone
the lower part of which has a flange upon it to which flange
movable button is attached. The patentee has introduced a mode
of operation not before employed in burden cars, that is to say,
nearly equal pressure in all directions by the entire load, save that
small part which rests on the movable bottom; the effects of which
are that the load, in a great degree, supports itself, and the tensile
strength of the iron is used, while at the same time, by reason of
the same form, the center of gravity of the load is depressed, and
its discharge facilitated. Defendants make cars similar to plaintiffs
except that the form was octagonal instead of circulars.
HELD: There is infringement if the form is so near to a true circle
as substantially to embody patentees mode of operation and
thereby attain the same kind of result as was reached by his
invention. 118
Doctrine of Equivalents
Illustrative Case
Gsell v. Yap G.R. No. L – 4720, Jan. 19, 1909
In the manufacture of canes and umbrella with a
curved handle by means of a lamp or blowpipe,
the defendant fed the lamp with alcohol in place
of mineral oil or petroleum which the patentee,
used and cited that change of fuel as defense
against the case for infringement. Finding that
alcohol is a well-known equivalent to petroleum
or mineral oil the defendant was held liable for
infringement.
120
30

Doctrine of Equivalents
Illustrative Case
Smith Kline Beckman v. Court of Appeals G.R. No. 126627.
August, 2003.
In action for infringement Smith Kline claims that the active
ingredient albendazole of defendent drug imjoregnon is
equivalent to its patented compound, both being sold to
combat worm or parasite infestation in animals. The court
dismissed the case because apart from showing that both are
anthelmintic agents, meant to combat worm or parasite
infestation in animals. Smith Kline did not substantiate the
method or means by which albendazole weeds out parasites in
animals thus giving no information on whether that method
works in substantially, the same way as Smith Klines
compounds. Identity of result by itself does to prove that the
two compound are equivalent. 121
Graver Tank & Mfg. Co. v. Linde Air Products Co.
339 U.S. 605 (1950), U.S. Supreme Court
2. The essence of the doctrine of equivalents is that one may not practice
a fraud on a patent. P. 339 U.S. 608. To permit imitation of a patented
invention which does not copy every literal detail would be to convert
the protection of the patent grant into a and useless thing.
3. The doctrine of equivalents is founded on the theory that, if two
devices do the same work in substantially the same way and
accomplish substantially the same result, they are the same, even
though they differ in name, form or shape Pp. 339 U.S. 608-609.
4. In determining equivalents, consideration must be given to the purpose
for which an ingredient is used in a patent, the qualities it has when
combined with other ingredients, the functions which it is intended to
perform, and whether persons reasonably skilled in the art would have
known of the interchangeability of an ingredient not contained in the
patent with one that was, P. 339 U.S. 609.
5. A finding of equivalence is a determination of fact to be made by the
trial court, and the trial court’s decision should not be disturbed unless
123
clearly erroneous. Pp. 339 U.S. 609-610.
Graver Tank & Mfg. Co. v. Linde Air Products Co.
339 U.S. 605 (1950), U.S. Supreme Court
1. On the record in this case, involving a claim of a combination of
alkaline earth metal silicate and calcium fluoride, the trial court
was justified in finding that the substitution in the accused
composition of manganese silicate (which is not an alkaline
earth metal
Page 339 U.S. 606
Silicate for magnesium silicate (which is an alkaline earth metal
silicate), where the two compositions were substantially identical in
operation and result, was so insubstantial, in view of the
technology and the prior art, that the patent was infringed under the
doctrine of equivalents. Pp. 339 U.S. 610-612.
122
Autogiro Company of America v. United States Court of Claims
384 F.2d 391, October 13, 1967
The range of equivalence varies with each patent; however, some general
guidelines can be drawn. One important guide is whether persons reasonably
skilled in the art would have known of the interchangeability of an ingredient not
contained in the patent with one that was. Id at 609, 70 S. Ct. 854. Another guide
is the notion that pioneer patents are to be given wider ranges of equivalence
than minor improvement patents. This statement is less a canon of construction
and more a shorthand expression for the dictates of the law and the patents
themselves. The doctrine of equivalence is subservient to file wrapper estoppel.
It may not include within its range anything that would vitiate limitations
expressed before the Patent Office. Thus a patent that has been severely limited
to avoid the prior art will only have a small range between it and the point
beyond which it violates file wrapper estoppel. Similarly a patent which is a
major departure from the prior art will have a larger range in which equivalence
can function. The scope of the patents also influences the range of equivalence.
A pioneer patent which occupies symbolically a six-inch circle will have three
inches of equivalence if its range is fifty percent. An improvement patent
occupying a two-inch circle has only one inch of equivalence with the same
range. Thus with relatively identical ranges, the scope of the patent provides the
pioneer patent with absolutely a larger range of equivalence.
124
31
 Limitations to the Principle of Equivalents
PROSECUTION HISTORY ESTOPPEL
 Facts: Warner Jenkinson v. Hilton Davis Chemicals Co. 520 U.S. 17 (1997). The ‘746
patent was issued to Hilton Davis in 1985. As relevant to this case, the patent claims as
its invention an “improvement in the ultrafiltration process as follow:
“in a process for the purification of a dye… the improvement which comprises:
subjecting an aqueous solution…to ultrafiltration through a membrane having a
nominal pore diameter of 5-15 Angstroms under a hydrostatic pressure of
approximately 200 to 400 p.s.i.g., at a pH from approximately 6.0 to 9.0, to thereby
cause separation of said impurities from said dye…” App. 36-37 (emphasis added).
The inventors added the phrase “at a pH from approximately 6.0 to 9.0” during patent
prosecution. At a minimum, this phrase was added to distinguish a previous patent
(the “Booth” patent) that disclosed an ultrafiltration process operating at a pH above
9.0. The parties disagree as to why the low end pH limit of 6.0 was included as part of
the claim.
In 1986, Warner Jenkinson developed an ultrafiltration process that operated with
membrane pore diameters assumed to be 5-15 Angstroms, at pressures of 200 to nearly
500 p.s.i.g., and a pH of 5.0. Warner Jenkinson did not learn of the ‘746 patent until after
it had begun commercial use of its ultrafiltration process. Hilton Davis eventually
learned of Warner. 125
Limitations to the Principle of Equivalents
PROSECUTION HISTORY ESTOPPEL
We think the better rule is to place the burden on the patent holder to establish
the reason for an amendment required during patent prosecution. The court then
would decide whether that reason is sufficient to overcome prosecution history
estoppel as a bar to application of the doctrine of equivalents to the element
added by that amendment. Where no explanation is established, however, the
court should presume that the PTO had a substantial reason related to
patentability for including the limiting element added by amendment. In those
circumstances prosecution history estoppel would bar the application of the
doctrine equivalents as to the element.
Today we adhere to the doctrine of equivalents. The determination of equivalence
should be applied as an objective inquiry on an element by element basis.
Prosecution history estoppels continues to be available as a defense to
infringement, but if the patent holder demonstrates that an amendment required
during prosecution had a purpose unrelated to patentabilty, a court must consider
that purpose in order to decide whether an estoppel is precluded. Where the
holder is unable to establish such a purpose, a court should presume that the
purpose behind the required amendment is such that prosecution history
estoppel would apply. Because the Court of Appeals for the Federal Circuit did
not consider all of the requirements as described by us today, particularly as
related to prosecution history estoppel and the preservation of some meaning for
each element in a claim, we reverse and remand for further proceedings
127
consistent with this opinion. (Warner Jenkinson v. Hilton Davis Chemicals, ibid)
Limitations to the Principle of Equivalents
PROSECUTION HISTORY ESTOPPEL
In this case, the patent examiner objected to the patent claim due to a
perceived overlap with the Booth patent, which revealed an ultrafiltration
process operating at a pH above 9.0. In response to this objection, the
phrase “at a pH from approximately 6.0 to 9.0” was added to the claim.
While it is undisputed that the upper limit of 9.0 was added in order to
distinguish the Booth patent, the reason for adding the lower limit of 6.0
is unclear. The lower limit certainly did not serve to distinguish the
Booth patent, which said nothing about pH level below 6.0. Thus, while a
lower limit of 6.0 by its mere inclusion, became a material element of the
claim, that did not necessarily preclude the application of the doctrine of
equivalents as to that element. See Hubbell v. United States, 179 U.S. 77,
82 (1900) (“ ‘[A]II [specified elements] must be regarded as material,’
“though it remains an open” ‘question whether an omitted part is
supplied by an equivalent device or instrumentality” (citation omitted)).
Where the reason for the change was not related to avoiding the prior
art, the change may introduce a new element, but it does not necessarily
preclude infringement by equivalents of that element.
(Warner Jenkinson v. Hilton Davis Chemicals, ibid)
126
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.
535 U.S. 722, May 28, 2002
FACTS: Petitioner's patent applications, as often occurs, were
amended during the prosecution proceedings. The application for
the first patent, the Stoll Patent (D. S. Patent No. 4,354,125), was
amended after the patent examiner rejected the initial application
because the exact method of operation was unclear and some
claims were made in an impermissible way. (They were multiply
dependent.) 35 D. S. C. § 112 (1994 ed.). The inventor, Dr. Stoll,
submitted a new application designed to meet the examiner's
objections and also added certain references to prior art. 37 CFR §
1.56 (2000). The second patent, the Carroll Patent (D. S. Patent
No. 3,779,401), was also amended during a reexamination
proceeding. The prior art references were added to this amended
application as well. Both amended patents added a new limitation-
that the inventions contain a pair of sealing rings, each having a lip
on one side, which would prevent impurities from getting on the
piston assembly. The amended Stoll Patent added the further
128
limitation that the outer shell of the device, the sleeve, be made
of a magnetizable material.
32
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. Prosecution History Estoppel
535 U.S. 722, May 28, 2002
Prosecution history estoppel requires that the claims of a patent
FACTS: After Festo began selling its rodless cylinder,
be interpreted in light of the proceedings in the PTO during the
respondents (whom we refer to as SMC) entered the market
application process. Estoppel is a “rule of patent construction”
with a device similar, but not identical, to the ones disclosed
that ensures that claims are interpreted by reference to those
by Festo's patents. SMC's cylinder, rather than using two one-
“that have been cancelled or rejected.” Schriber-Schroth Co. v.
way sealing rings, employs a single sealing ring with a two-way
Cleveland Trust Co., 311 U. S. 211, 220–221 (1940). The doctrine
lip. Furthermore, SMC's sleeve is made of a nonmagnetizable
of equivalents allows the patentee to claim those insubstantial
alloy. SMC's device does not fall within the literal claims of
alterations that were not captured in drafting the original patent
either patent, but petitioner contends that it is so similar that
claim but which could be created through trivial changes. When,
it infringes under the doctrine of equivalents. SMC contends
however, the patentee originally claimed the subject matter
that Festo is estopped from making this argument because of
alleged to infringe but then narrowed the claim in response to a
the prosecution history of its patents. The sealing rings and
rejection, he may not argue that the surrendered territory
the magnetized alloy in the Festo product were both disclosed
comprised unforeseen subject matter that should be deemed
for the first time in the amended applications. In SMC's view,
equivalent to the literal claims of the issued patent.
these amendments narrowed the earlier applications,
surrendering alternatives that are the very points of
(Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., ibid)
difference in the competing devices-the sealing rings and the
129 130
type of alloy used to make the sleeve.

Prosecution History Estoppel Prosecution History Estoppel

Prosecution history estoppel ensures that the doctrine of
equivalents remains tied to its underlying purpose. Where
the original application once embraced the purported
equivalent but the patentee narrowed his claims to obtain
the patent or to protect its validity, the patentee cannot
assert that he lacked the words to describe the subject
matter in question. The doctrine of equivalents is premised
on language’s inability to capture the essence of
innovation, but a prior application describing the precise
element at issue undercuts that premise. In that instance
the prosecution history has established that the inventor
turned his attention to the subject matter in question, knew
the words for both the broader and narrower claim, and
affirmatively chose the latter.
(Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., ibid)131
Narrowing of claim does not constitute a
complete bar from asserting infringement on any
equivalent.
Our conclusion that prosecution history estoppel arises when a
claim is narrowed to comply with § 112 gives rise to the second
question presented: Does the estoppel bar the inventor from
asserting infringement against any equivalent to the narrowed
element or might some equivalents still infringe? Though
prosecution history estoppel can bar a patentee from challenging a
wide range of alleged equivalents made or distributed by
competitors, its reach requires an examination of the subject matter
surrendered by the narrowing amendment. The complete bar avoids
this inquiry by establishing a per se rule; but that approach is
inconsistent with the purpose of applying the estoppel in the first
place—to hold the inventor to the representations made during the
application process and to the inferences that may reasonably be
drawn from the amendment.
(Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., ibid)
132

33
Prosecution History Estoppel
Narrowing of claim does not constitute a
complete bar from asserting infringement on any
equivalent.
By amending the application, the inventor is deemed to
concede that the patent does not extend as far as the original
claim. It does not follow, however, that the amended claim
becomes so perfect in its description that no one could devise
an equivalent. After amendment, as before, language remains
an imperfect fit for invention. The narrowing amendment may
demonstrate what the claim is not; but it may still fail to
capture precisely what the claim is. There is no reason why a
narrowing amendment should be deemed to relinquish
equivalents unforeseeable at the time of the amendment and
beyond a fair interpretation of what was surrendered.
(Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., ibid)
133
Festo Corp. v. Shoketsu Kinzoku Kogyo
Kabushiki Co., ibid
RULING: Just as Warner-Jenkinson held that the patentee
bears the burden of proving that an amendment was not made
for a reason that would give rise to estoppel, we hold here
that the patentee should bear the burden of showing that the
amendment does not surrender the particular equivalent in
question. This is the approach advocated by the United States,
see Brief for United States as Amicus Curiae 22-28, and we
regard it to be sound. The patentee, as the author of the claim
language, may be expected to draft claims encompassing
readily known equivalents. A patentee's decision to narrow his
claims through amendment may be presumed to be a general
disclaimer of the territory between the original claim and the
amended claim. Exhibit Supply, 315 U. S., at 136-137 ("By the
amendment [the patentee] recognized and emphasized the
difference between the two phrases and proclaimed his
abandonment of all that is embraced in that difference"). 135
Prosecution History Estoppel
Narrowing of claim does not constitute a
complete bar from asserting infringement on any
equivalent.
Nor is there any call to foreclose claims of equivalence for
aspects of the invention that have only a peripheral relation to
the reason the amendment was submitted. The amendment
does not show that the inventor suddenly had more foresight
in the drafting of claims than an inventor whose application
was granted without amendments having been submitted. It
shows only that he was familiar with the broader text and with
the difference between the two. As a result, there is no more
reason for holding the patentee to the literal terms of an
amended claim than there is for abolishing the doctrine of
equivalents altogether and holding every patentee to the literal
terms of the patent.
134
(Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., ibid)
Festo Corp. v. Shoketsu Kinzoku Kogyo
Kabushiki Co., ibid
RULING: (cont.) There are some cases, however, where the
amendment cannot reasonably be viewed as surrendering a
particular equivalent. The equivalent may have been
unforeseeable at the time of the application; the rationale
underlying the amendment may bear no more than a tangential
relation to the equivalent in question; or there may be some
other reason suggesting that the patentee could not reasonably
be expected to have described the insubstantial substitute in
question. In those cases the patentee can overcome the
presumption that prosecution history estoppel bars a finding of
equivalence. This presumption is not, then, just the complete
bar by another name. Rather, it reflects the fact that the
interpretation of the patent must begin with its literal claims,
and the prosecution history is relevant to construing those
claims.
136
34
 Festo Corp. v. Shoketsu Kinzoku Kogyo
Kabushiki Co., ibid
RULING: (cont.) When the patentee has chosen to
narrow a claim, courts may presume the amended text
was composed with awareness of this rule and that the
territory surrendered is not an equivalent of the
territory claimed. In those instances, however, the
patentee still might rebut the presumption that
estoppel bars a claim of equivalence. The patentee
must show that at the time of the amendment one
skilled in the art could not reasonably be expected to
have drafted a claim that would have literally
encompassed the alleged equivalent. On the record
before us, we cannot say petitioner has rebutted the
presumptions that estoppel applies and that the
equivalents at issue have been surrendered.
137
Infringement of patents; process patents;
burden of proof (Sec. 78 RA 8293)
If the subject matter of a patent is a process for
obtaining a product, any identical product shall be
presumed to have been obtained through the use of
the patented process if the product is new or there
is substantial likelihood that the identical product
was made by the process and the owner of the
patent has been unable despite reasonable efforts,
to determine the process actually used. In ordering
the defendant to prove that the process to obtain
the identical product is different from the patented
process, the court shall adopt measures to protect,
as far as practicable, his manufacturing and business
secrets. (n) 139
Festo Corp. v. Shoketsu Kinzoku Kogyo
Kabushiki Co., ibid
RULING: (cont.) While estoppel does not effect a
complete bar, the question remains whether petitioner
can demonstrate that the narrowing amendments did
not surrender the particular equivalents at issue. On
these questions, SMC may well prevail, for the sealing
rings and the composition of the sleeve both were
noted expressly in the prosecution history. These
matters, however, should be determined in the first
instance by further proceedings in the Court of Appeals
or the District Court.
The judgment of the Federal Circuit is vacated, and the
case is remanded for further proceedings consistent
with this opinion.
138
Infringement of patents; contributory
infringement (Sec. 76.6 RA 8293)
Anyone who actively induces the infringement
of a patent or provides the infringer with a
component of a patented product or of a product
produced because of a patented process
knowing it to be specially adopted for infringing
the patented invention and not suitable for
substantial non-infringing use shall be liable as
a contributory infringer and shall be jointly and
severally liable with the infringer. (Sec. 42, R.A.
No. 165a)
140
35
Infringement of patents; contributory
infringement § 271 (c) & (d) Patent Code (US)
Please read:
“(c) Whoever sells a component of a patented machine,
manufacture, combination or composition, or a material or apparatus
for use in practicing a patented process, constituting a material part of
the invention, knowing the same to be especially made or especially
adapted for use in an infringement of such patent, and not a staple
article or commodity of commerce suitable for substantial
noninfringing use, shall be liable as a contributory infringer.
“(d) No patent owner otherwise entitled to relief for infringement or
contributory infringement of a patent shall be denied relief or deemed
guilty of misuse or illegal extension of the patent right by reason of his
having done one or more of the following: (1) derived revenue from acts
which if performed by another without his consent would constitute
contributory infringement of the patent; (2) licensed or authorized
another to perform acts which if performed without his consent would
constitute contributory infringement of the patent: (3) sought to enforce
his patent rights against infringement for contributory infringement.”
141
Infringement of patents; contributory
infringement (Sec. 76.6)
“It is admitted that petitioners (Aro) know that the
purchasers intend to use the fabric for replacement
purposes on automobile convertible tops which are
covered by the claims of respondent’s combination
patent, and such manufacture and sale with that
knowledge might well constitute contributory
infringement under § 271.
It was also held that there can be no contributory
infringement unless there is direct infringement!
143
Infringement of patents; contributory
infringement (Sec. 76.6)
1. ARO Manufacturing Co v. Convertible Top Replacement Co., Inc.,
337 US 476
FACTS: Respondent Convertible Top Replacement Co., Inc. (CTR)
acquired by assignment from the Automobile Body Research Corporation
(AB) all rights for the territory of Massachusetts in United States Patent
No. 2,569,724, known as the Mackie-Duluk patent. This is combination
patent covering a top structure for automobile convertibles structure
embodying the patented combination were included as original equipment
in 1952 --- 1954 models of convertibles manufactured by the General
Motors Corporation and the Ford Motor Company. They were included in
the General Motors cars by authority of license granted to General
Motors by AB; Ford, however, had no license during the 1952 --- 1954
period, and no authority whatever under the patent until July 21, 1955, when
it entered into an agreement, discussed later, with AB; Ford’s manufacture
and sale of the automobiles in question therefore infringed the patent.
Petitioner Aro Manufacturing Co., Inc. (Aro), which is not licensed under the
patent, produces fabric components designed as replacements for wornout
142
fabric portions of convertible tops.
Infringement of patents; contributory
infringement (Sec. 76.6)
We turn next to the question whether Aro, as supplier of replacement
fabrics for use in the infringing repair by the Ford car owners, was a
contributory infringer under § 271 (c) of the Patent Code. That
section provides:
“Whoever sells a component of a patented machine,
manufacture, combination or composition, or a
material or apparatus for use in practicing a patented
process, constituting a material part of the invention
knowing the same to be especially made or
especially adapted for use in an infringement of such
patent, and not a staple article or commodity of
commerce suitable for substantial noninfringing use,
shall be liable as a contributory infringer.”
144
36
Infringement of patents; contributory
infringement (Sec. 76.6)
HELD: We think Aro was indeed liable under this provision.
Such a result would plainly have obtained under the contributory-
infringement case law that § 271 (c) was intended to codify. 6
Indeed, most of the law was established in cases where, as here,
suit was brought to hold liable for contributory infringement a
supplier of replacement parts specially designed for use in the
repair of infringing articles.
2. DAWSON CHEMICAL CO. V. ROHM & HAAS CO.
(448 US 176, June 27, 1980)
FACTS: Invalidation of the Monsanto patent for “propanil a
herbicide particularly well suited for the cultivation of rice, cleared
the way for Rohm & Haas, respondent here, to obtain a patent on
the method or process for applying propanil.
145
Infringement of patents; contributory
infringement (Sec. 76.6)
HELD: The critical inquiry in this case is how the enactment of § 271
affected the doctrines of contributory infringement and patent misuse.
Viewed against the backdrop of judicial precedent, we believe that the
language and structure of the statute lend significant support to Rohm &
Haas’ contention that, because § 271 (d) immunizes its conduct from the
change of patent misuse, it should not be barred from seeking relief. The
approach that Congress took toward the codification of contributory
infringement and patent misuse reveals a compromise between those two
doctrines and their competing policies patentees to exercise control over
nonstaple articles used in their inventions.
Section 271 (c) identifies the basic dividing line between contributory
infringement and patent misuse. It adopts a restrictive definition of
contributory infringement that distinguishes between staple and
nonstaple articles of commerce. It also defines the class of nonstaple
items narrowly. In essence, this provision places materials like the dry
ice of the Carbice case outside the scope of the contributory infringement
doctrine. As a result, it is no longer necessary to resort to the doctrine of
patent misuse in order to deny patentees control over staple goods used 147
in their inventions.
Infringement of patents; contributory
infringement (Sec. 76.6)
Petitioners, too, are chemical manufacturers. They have manufactured
and sold propanil for application to rice crops since before Rohm & Haas
received its patent. They market the chemical in containers on which are
printed directions for application in accordance with the method claimed
in the Wilson patent. Petitioners did not cease manufacture and sale of
propanil after that patent issued, despite knowledge that farmers
purchasing their products would infringe on the patented method by
applying the propanil to their crops. Accordingly, Rohm & Haas filed this
suit, in the United States District Court for the Southern District of Texas,
seeking injunctive relief against petitioners on the ground that their
manufacture and sale propanil interfered with its patent rights.
The complaint alleged not only that petitioners contributed to
infringement by farmers who purchased and used petitioners’ propanil,
but also that they actually induced such infringement by instructing
farmers how to apply the herbicide. See 35 U.S.C. §§ 271 (b) and (c).
Petitioners responded to the suit by requesting licenses to practice the
patented method. When Rohm & Haas refused to grant such licenses,
however petitioners raised a defense of patent misuse and 146
counterclaimed for alleged antirust violations by respondent.
Infringement of patents; contributory
infringement (Sec. 76.6)
Since our present task is one of statutory construction, questions of
public policy cannot be determinative of the outcome unless specific
policy choices fairly can be attributed to Congress itself. In this instance,
as we have already stated, Congress chose a compromise between
competing policy interests. The policy of free competition runs deep in
our law. It underlies both the doctrine of patent misuse and the general
principle that the boundary of a patent monopoly is to be limited by the
literal scope of the patent claims. But the policy of stimulating invention
that underlies the entire patent system runs no less deep. And the
doctrine of contributory infringement, which has been called “an
expression both of law and morals,” Mercoid I, 320 U.S., at 677
(Frankfurter, J., dissenting), can be of crucial importance in ensuring that
the endeavors and investments of the inventor do not go unrewarded.
In accord with our understanding of that statue, we hold that Rohm &
Haas has not engaged in patent misuse, either by its method of selling
propanil, or by its refusal of license others to sell that commodity. The
judgement of the Court of Appeals is therefore affirmed.
148
37
AMENDMENTS introduced by the Affordable AMENDMENTS introduced by the Affordable
Medicine Law (R.A. 9502) that affects the scope of Medicine Law (R.A. 9502) that affects the scope of
Sec. 35, 36, and 75 consisting of changes to Sec. Sec. 35, 36, and 75 consisting of changes to Sec.
22.1 and 22.2 22.1 and 22.2
22.1. In the case of drugs and medicines,
there is no inventive step if the invention 22.1. (contd) for the purpose of
results from the mere discovery of a new this clause, salts, esters, ethers,
form or new property of a known polymorphs, metabolites, pure form,
substance which does not result in the particle size, isomers, mixture of
enhancement of the known efficacy of isomers, complexes, combinations and
that substance, or the mere discovery of other derivatives of a known substance
any new property or new use for a known shall be considered the same
substance, or the mere use of a known substance, unless they differ,
process unless such known process significantly in properties with regard
results in a new product that employs at 149 to efficacy. 150
least one new reactant.

CRITIQUE OF 21.2 & 22.2 as Amended CRITIQUE OF 21.2 & 22.2 as Amended
There are important considerations that render this
amendment legally objectionable, viz:
Second, the amendment has the effect of
First, the amendment expanded the concept of a broadening the scope of protection of the
known substance to include even substances different patent, thus widening the breadth of the
in chemical structure and physical properties, among
patentee’s monopoly over the product to include
others, from those disclosed at the filing date or priority
date of the patent application covering the known its so-called derivatives. Clearly, this would
substance. Even if these new forms or derivatives do benefit the patentee rather than the consumer, a
not exist yet, or their existence is not yet determined to result not sought by the legislator.
be probable (such as polymorphs and optical isomers),
are not yet determined to be synthetically obtainable
(such as complexes) or capable of isolation (such as
pure forms). This would achieve the objective of the law
to not allow any other person to obtain a subsequent
patent for the new forms or derivatives. 151 152

38

CRITIQUE OF 22.1 & 22.2 as Amended
Third, it renders futile the carrying out of a so-
called search of patent documents by a patent applicant
to determine if his invention is new and inventive. This is
because the claims of the patent relating to a drug or
medicine may not include their derivatives in the
disclosures of the patent but would still be considered
within the scope of the protection of the patent. The
same difficulty will be encountered by patent examiners
in carrying out the substantive examination of patent
applications.
Fourth, a businessman’s due diligence
assessment regarding the availability of a certain
pharmaceutical product for public use will be seriously
hampered. 153
Infringement of Patents
• Defenses against patent infringement
1. Use of the patent is covered by a limitation to the
rights of the patentees;
2. Grounds for cancellation of the patent, viz:
 the invention is not new or patentable;
 insufficient and incomplete disclosure of the
invention thus failing to enable the person skilled in the art
to carry out the invention;
 the patent is contrary to public order or morality
(Sec. 61, RA 8293).
155
Requirement of notice to recover damages
(Sec. 80)
Damages; Requirements of Notice. – Damages
cannot be recovered for acts of infringement
committed before the infringer had known, or
had reasonable grounds to know of the patent. It
is presumed that the infringer had known of the
patent if on the patented product, or on the
container or package in which the article is
supplied to the public, or on the advertising
material relating to the patented product or
process, are placed the words “Philippine
Patent” with the number of the patent
(Sec. 44, RA No. 165a).
154
Who may file an infringement action?
 Cresser v. Court of Appeals, 286 SCRA 13
Only the patentee can institute an action
for patent infringement. The phrase “anyone
possessing any right, title or interest in and
to the patented invention “in Section 76.2
refers to the patentees successors interest,
assignees or grantees.
 As to who possesses the Right to a Patent,
please refer to Sections 28, 29 and 30 of RA
8293.
156
39
Infringement of Patents
What are the remedies against
infringers?
- Civil action for infringement for
injunction and damages.
- Criminal action for infringement.
- Administrative remedy.
157
Infringement of Patents
• Administrative remedy
Instead of filing the infringement
action with the Court it may be filed with
Bureau of Legal Affairs (BLA) of the IPO if
the amount of damages claimed is not less
than P200.000. The Department of Trade
and Industry’s Office of legal affairs and its
Regional Offices have also jurisdiction to
try this case regardless of the amount of
damages claimed.
159
Infringement of Patents
• Criminal action for infringement
It is only after the infringement is
repeated that the infringer shall be
criminally liable
(prescription: 3 yrs from the commission of
the second infringement).
158
INDUSTRIAL DESIGN
Definition
Any composition of line or colors or
any three dimensional form, whether or
not associated with lines or colors:
Provided, that such composition or form
gives a SPECIAL APPEARANCE to and
can serve as pattern for an industrial
product or handicraft.
(Sec. 122, RA 8293).
160
40
INDUSTRIAL DESIGN (continued) INDUSTRIAL DESIGN (continued)
Examples:
Conditions for Protection

Must be new or original, and not

dictated essentially by technical or
functional considerations to obtain a
technical result and not contrary to
public order, health or morals.

161 162

INDUSTRIAL DESIGN (continued) INDUSTRIAL DESIGN (continued)

Term:
Examination Procedure:
5 years from filing date and renewable for
There is no substantive examination to determine
whether it is new or original but the examination is not more than 2 consecutive period of 5 years.
limited only as to its compliance with formal
requirements. Applicability of Patent Law Provisions:
However, the bibliographic data and representative In almost all other matters, yes, except on
drawing of the application will be published in the IPO
Gazette plus a registrability if one was issued at the when to file the application to claim the priority
instance of the applicant. Within 2 months from date of the corresponding foreign application,
publication “any interested party” may request for a which is only (6) six months.
registrability report and/or furnish the IPO information
that the design is not new; the decision to register or to
163 164
refuse the registration will follow.

41
 UTILITY MODELS Examples:
• Concept: No Inventive Step
The IP Code retains the
feature provided in R.A. 165
which distinguishes a utility
model from an invention, that
is, that a utility model does not
involve inventive steps to be
registrable. It is enough that it
has utility. 165 166

UTILITY MODELS (continued) UTILITY MODELS (continued)

• Examination Procedure
The IP Code, however, does not require that the
application for registration of a utility model undergo
substantive examination to determine novelty. The purpose
of this rule is to hasten the processing of utility model.
However, the bibliographic data and representative
drawing of the application will be published in the IPO
Gazette plus a registrability if one was issued at the
instance of the applicant. Within 2 months from publication
“any interested party” may request for a registrability
report and/or furnish the IPO information that the utility
model is not new; the decision to register or to refuse the
registration will follow.
167
• Cancellation
The registration may be cancelled, however, by the
Director of Patents at the instance of any person who may be
damaged by the registration if it is found lacking novelty.
• Term
As to the term of the utility model, the IP Code limits it
to seven (7) years after the date of the filing of application.
• Applicability of Patent Law
Aside from the foregoing, the provisions governing
patents apply, all things being equal, to the registration of the
utility models.
168

42
PATENT Source: WIPO PATENT
1. Nurik, a schoolboy, while helping his mother in the kitchen to cut fruits,
invented a cutter with a unique shape of blade which enabled the device 2. Which of the following statements is false?
to work faster. His mother wonders that they should do with this small
invention. Please indicate which statement is correct: Choose one answer.

Choose one answer.  a. The patent owner is not required to disclose his
invention
 a. Nurik cannot be considered an inventor, since he is not
an adult
 b. The owner of patent is not obliged to grant a
 b. Nurik should not seek for patent protection license
since the invention is a minor improvement on the
existing cutter and therefore would fail the “inventive  c. A patent gives its owner the right to exclude
step” requirement for patent protection others from using the invention

 c. Nurik should seek for industrial design protection for  d. The exclusive rights may be limited under certain
his device since it has a unique shape that has not conditions
been developed before

 d. Nurik is the inventor and may seek patent protection.

 e. It is better to keep the invention as a trade secret until

Nurik gets older so he can apply for patent protection169 Source: WIPO
170

PATENT PATENT
3. Please indicate the correct statement among the following: To be 4. In case of an infringement of a patent, who has the right to start
patentable: enforcement proceedings?

Choose one answer. Choose one answer.

 a. An invention should be known by the majority of  a. The family of the owner of the patent, in the
experts in the field event the right holder does not want to start any
enforcement action
 b. An invention must be novel, be discovered by an
expert, and be industrially applicable  b. The company that was contracted to produce the
patented goods, even through the rights in the
 c. An invention must be innovative, involve an patent reside in another person
inventive step, and be practicable
 c. Law enforcement officials, even where the owner
 d. An invention must be new, involve an inventive of the patent does not wish to do so
step, and be known by experts
 d. The right holder
 d. An invention must be novel, involve an inventive
step, and be industrially applicable
171 172
Source: WIPO Source: WIPO

43
PATENT PATENT
5. John, a national of country A, invented a device for cars of an 6. Among the following articles, which one is not an invention?
original shape which helps improve their crash resistance by up
to 80% as compared to any other device in existence. John would Choose one answer.
like to know whether he could prohibit company X, based in
country A, from importing the device manufactured using his  a. Band aid
patent in another country. Which one is the best answer?
 b. A note pad with glue on the back of each pad
Choose one answer.
 c. Airplane engine
 a. No, because he is not a manufacturer of the
imported device  d. Cell phone

 b. No, because he is not a manufacturer of the  e. Einstein’s formula of energy, E = mc(2)

imported device

 c. No, because his exclusive rights are territorial

 d. Yes, because the compulsory license was not

issued
173 174
Source: WIPO Source: WIPO

PATENT PATENT Source: WIPO

8. John, a notional of country A, invented a device for cars of an original

7. Which of the following acts may be deemed as infringing the shape which helps improve their crash resistance by up to 80% as
patent owner’s rights? compared to any other device in existence. After the
commercialization and usage of the device, it became famous
Choose one answer. in the market. He noticed that his invention was being used in
another country B, where he had not secured protection. Can he
 a. Copying his/her published patent application enforce his rights in country B based on the IP protection provided in
without his/her consent his home country A?

 b. Informing friends about the new invention Choose one answer.

without the permission of the patent owner
 a. No, he cannot, since IP rights are territorial,
 c. Purchasing the patent products without the John has to obtain protection in country B
consent of the patentee
 b. Yes, he can, since the invention became well
 d. Using the invention to create a product, and known all over the world
selling the patented product without the
 c. No, he cannot, because he did not use the PCT
authorization of the patent owner
system to secure his rights in country B

 d. Yes, he can, because he is the inventor of the

175 device and he has exclusive rights on the use of 176
Source: WIPO
the device

44
 PATENT PATENT
9. Mr. Samson designed a side-tilting wheelbarrow for a more 10. The term of the patent is:
convenient way of disposing or dumping its load. He has talked
to many farmers and construction workers who preferred this Choose one answer.
manner of removing the contents of the wheelbarrow over the
existing art of disposing cargo by pivoting the wheelbarrow at its  a. 20 years
front. He asks you as his lawyer to advise what kind of protection
can he obtained under the law.  b. 20 years from grant

Choose one answer.  c. 17 years from grant

 a. Patent for invention  d. 20 years from filing

 b. Industrial design  e. 10 years and renewable by another 10 years

 c. Utility model

 d. Copyright

177 178

11. Pfizer, who holds a patent for Viagra in the Philippines, filed a case in court,
seeking to enjoin the importation into the Philippines of genuine viagra
INDUSTRIAL DESIGN Source: WIPO
products sourced from Pfizer’s licensee in Hong Kong on the ground that as
1. Mr. Melis made an original design of a car and would like to know
the patentee here it has the exclusive right to make, use, sale or import the
product and no one else. if there is a way of protecting this design other than through
industrial design protection. If there is another way of protection,
Choose one answer. which of the following would you advise him to apply?
 a. The action will prosper because such importation by
Choose one answer.
another person of viagra, although also made by a licensee
of Pfizer in Hong Kong, would constitute infringement of
the patent of Pfizer in the Philippines  a. Patent

 b. It will prosper because the imported viagra will be  b. Trademark

considered counterfeit under the Philippine law which
prohibits the sale and distribution of medicine, unless they
are registered with the Philippine FDA  c. Trade secrets

 c. It will prosper because to allow the importation of Viagra  d. There is no other way of protection
made by Pfizer’s Hong Kong licensee into the Philippines
will seriously upset the pricing structure of Viagra in the
Philippines

 d. It will not prosper because the law on affordable medicine

has provided that in case of drugs or medicine, such as
Viagra, the sale of the patented product in any other

PATENT country in the world would “exhaust” the patentee’s 179 180
exclusive right

45
BIOGRAPHY:
IGNACIO S. SAPALO is the managing partner at Sapalo Velez
Bundang & Bulilan. He obtained a bachelor of science in engineering
in 1963 and a bachelor of law from Ateneo de Manila in 1967. He was
the director of the Philippine Bureau of Patents, Trade Marks and
Technology Transfer from1987 to 1996. During this time, he led the
group that drafted the 1998 IP Code of the Philippines.

He is the author of “Background Reading Material on the Intellectual

Property System of the Philippines” (WIPO, 1994) and has been a
professor of IP at the Ateneo School of Law since 1991 and at the
Jose Rizal University since 2016. He is a Pre-Bar Reviewer since
1994 also at Ateneo School of Law. He is the founder and president
of the Intellectual Property Foundation, and the president of IProbe
(an IP investigation and consulting firm). He is also a member of the
Integrated Bar of the Philippines, the Philippine Bar Association, the
Association Internationale pour la Protection de la Propriété
Industrielle, the Asian Patent Attorneys Association and the
Intellectual Property Association of the Philippines.
181

46